What are alternative ways to claim chemical compounds in patents?
Chemical compounds can be claimed in patents through various methods beyond structural formulas. The MPEP 2173.05(t) outlines several alternative approaches: Name-based claims: “Chemical compounds may be claimed by a name that adequately describes the material to one skilled in the art.” Characteristic-based claims: “A compound of unknown structure may be claimed by a combination of…
Read MoreCan alternative elements positively recited in the specification support a negative limitation?
Can alternative elements positively recited in the specification support a negative limitation? Yes, alternative elements positively recited in the specification can support a negative limitation in patent claims. This is explicitly mentioned in MPEP 2173.05(i): “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This means that…
Read MoreWhat happens if all patent claims are canceled in an Inter Partes Reexamination?
If all patent claims are canceled as a result of an inter partes reexamination, the USPTO will issue a certificate reflecting this outcome. According to MPEP 2688: “If a certificate issues which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue…
Read MoreWhat happens if all patent claims are canceled in an Ex Parte Reexamination?
If all patent claims are canceled as a result of an ex parte reexamination, it has significant consequences for the patent and any related proceedings. According to MPEP 2288: “If an ex parte reexamination certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be…
Read MoreWhat happens if all claims are disclaimed in a patent under reexamination?
When all claims in a patent under reexamination are disclaimed, a special type of reexamination certificate is issued to reflect this fact. According to MPEP 2287: “If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.570 will be issued indicating that fact.” This means that even if…
Read MoreWhat is the “algorithm requirement” for computer-implemented functions under 112(f)?
The “algorithm requirement” for computer-implemented functions under 35 U.S.C. 112(f) refers to the need for the specification to disclose an algorithm for performing the claimed specific computer function. As stated in MPEP 2181 II.B: “[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose…
Read MoreHow does an adverse judgment affect patent claims in interference proceedings?
An adverse judgment can have significant consequences for patent claims in interference proceedings. According to MPEP 2304.04(c), Form Paragraph 7.49 addresses this situation: “An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s)…
Read MoreWhat is the difference between “adapted to” and “capable of” in patent claims according to MPEP 2111.04?
MPEP 2111.04 does not explicitly differentiate between “adapted to” and “capable of” in patent claims. However, the guidance provided for “adapted to” can be applied to understand the difference: MPEP 2111.04 states: “The court noted that an intended use or purpose usually will not limit the scope of the claim because such statements usually do…
Read MoreWhat are the implications of “adapted to” or “adapted for” clauses in patent claims?
The implications of “adapted to” or “adapted for” clauses in patent claims depend on the specific context and how they are interpreted. According to MPEP 2111.04: “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit…
Read MoreWhat is the purpose of 37 CFR 1.927 in the reexamination process?
37 CFR 1.927 is a regulation that allows for petitions in the reexamination process. According to MPEP § 2655: “However, if a petition under 37 CFR 1.927 is granted overturning a refusal to order reexamination of all of the claims requested to be reexamined, the reexamination proceeding will normally be conducted by another examiner.” This…
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